DCT

1:20-cv-00984

Prolitec Inc v. ScentAir Tech LLC

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:20-cv-00984, D. Del., 05/23/2023
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is incorporated in Delaware and therefore resides in the district for patent venue purposes.
  • Core Dispute: Plaintiff alleges that Defendant’s ScentAir Breeze cloud-based scent delivery system infringes two patents related to removable cartridges for liquid diffusion devices.
  • Technical Context: The technology at issue pertains to ambient scenting systems used to create and control atmospheric conditions in commercial and residential spaces.
  • Key Procedural History: This filing is a Second Amended Complaint. Notably, Inter Partes Review (IPR) proceedings were concluded for both asserted patents prior to this filing. IPR certificates issued on August 16, 2022, cancelled numerous claims of both patents, including the specific claims asserted in this complaint. The continued assertion of these cancelled claims is a significant procedural element.

Case Timeline

Date Event
2004-XX-XX Defendant ScentAir founded
2014-04-22 Priority Date for ’004 and ’976 Patents
2015-10-20 Issue Date of U.S. Patent No. 9,162,004
2017-08-29 Issue Date of U.S. Patent No. 9,745,976
2022-08-16 IPR Certificate issues cancelling claims of the '004 Patent
2022-08-16 IPR Certificate issues cancelling claims of the '976 Patent
2023-05-23 Second Amended Complaint filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,162,004 B1 - “Removable Cartridge for Liquid Diffusion Device and Cartridge Insert Thereof,” issued October 20, 2015

The Invention Explained

  • Problem Addressed: The patent describes prior art liquid diffusion systems as suffering from messy and odorous reservoir refilling procedures, which made them impractical for use in public and commercial settings (’004 Patent, col. 1:20-31).
  • The Patented Solution: The invention proposes a disposable, removable cartridge containing a liquid to be diffused. A key component is a multi-functional insert featuring a "tortuous passage" downstream from a venturi device. This convoluted path is designed to refine the aerosol by causing larger liquid droplets to precipitate out, while also preventing the liquid from leaking if the cartridge is inverted (’004 Patent, Abstract; col. 2:5-12, col. 2:41-50).
  • Technical Importance: This approach aimed to make ambient scenting more convenient and reliable for commercial applications by eliminating direct handling of scent liquids and improving the safety and consistency of the diffusion process (’004 Patent, col. 1:23-31).

Key Claims at a Glance

  • The complaint asserts infringement of at least independent claim 9 (Compl. ¶26).
  • Essential elements of claim 9 include: a cartridge housing containing a liquid; a diffusion head with a venturi device to generate a diffused liquid; and an insert positioned downstream of the diffusion head, which itself includes an inlet, an outlet zone, and a tortuous passage between them.
  • However, an Inter Partes Review Certificate (IPR2021-00012) issued on August 16, 2022, states that claim 9 has been cancelled.

U.S. Patent No. 9,745,976 B2 - “Removable Cartridge for Liquid Diffusion Device and Cartridge Insert Thereof,” issued August 29, 2017

The Invention Explained

  • Problem Addressed: Similar to its parent, the ’976 patent addresses the drawbacks of conventional diffusion devices, such as messy refilling procedures that are undesirable for users and impractical in commercial environments (’976 Patent, col. 1:15-31).
  • The Patented Solution: The patent details a removable cartridge system that also employs an insert with a tortuous passage to refine diffused liquid particles. This patent further specifies the physical relationship between the components, describing the tortuous passage as being "partially capped by the cartridge housing" to define an aerosol outlet (’976 Patent, Claim 9). This structure serves to control the exit of the diffused liquid and prevent leakage.
  • Technical Importance: The invention represents a further refinement of the disposable cartridge concept, focusing on an efficient and robust form factor for creating and dispersing extremely small liquid particles (’976 Patent, col. 1:47-51).

Key Claims at a Glance

  • The complaint asserts infringement of at least independent claim 9 (Compl. ¶33).
  • Essential elements of claim 9 include: a cartridge housing; a venturi device; and a downstream insert with an inlet, an outlet zone, and a tortuous passage that is "partially capped by the cartridge housing" to form an aerosol outlet.
  • However, an Inter Partes Review Certificate (IPR2021-00014) issued on August 16, 2022, states that claim 9 has been cancelled.

III. The Accused Instrumentality

Product Identification

The ScentAir Breeze, which the complaint identifies as a "cloud-based scent delivery system" (Compl. ¶21).

Functionality and Market Context

The complaint provides minimal technical detail regarding the operation of the ScentAir Breeze. It alleges the product is marketed for both homes and businesses (Compl. ¶20). The infringement allegations imply that the ScentAir Breeze system utilizes a removable cartridge-based technology for diffusing scented liquids that corresponds to the structures described in the asserted patents (Compl. ¶26, ¶33).

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits that are not provided with the filed document; therefore, the infringement theories are summarized below in prose. No probative visual evidence provided in complaint.

’004 Patent Infringement Allegations

The complaint alleges that ScentAir's making, using, and selling of the ScentAir Breeze product and its related software infringes at least claim 9 of the ’004 patent (Compl. ¶26). The narrative infringement theory, incorporated by reference from an un-provided exhibit, is that the ScentAir Breeze system embodies the claimed cartridge, including a housing, a diffusion head with a venturi, and a downstream insert containing a "tortuous passage" for refining the diffused liquid (Compl. ¶26). The complaint does not provide sufficient detail for a more granular analysis of potential infringement disputes.

’976 Patent Infringement Allegations

Similarly, the complaint alleges that the ScentAir Breeze system infringes at least claim 9 of the ’976 patent (Compl. ¶33). The underlying infringement theory is that the accused product contains the elements of the claimed cartridge, specifically including a venturi device and an insert with a "tortuous passage" that is "partially capped" by the housing to form an outlet (Compl. ¶33). Specific factual mappings of product features to these claim elements are incorporated by reference from an un-provided exhibit (Compl. ¶33).

Identified Points of Contention

  • Legal Question: A threshold legal question for the court will be the viability of the infringement causes of action. The complaint asserts claims that were cancelled in IPR proceedings concluded in August 2022, nine months before the Second Amended Complaint was filed. The court will need to address the legal basis for maintaining a suit on cancelled patent claims.
  • Scope Questions: Assuming the claims were valid, a central dispute would likely concern whether the accused product's internal structure meets the definition of a "tortuous passage" as contemplated by the patents.
  • Technical Questions: A key technical question for the ’976 patent would be whether the accused cartridge has a structure where the insert and housing interface in a manner that constitutes a "partially capped" passage, as required by the claim.

V. Key Claim Terms for Construction

The Term: “tortuous passage” (asserted in claim 9 of both patents)

  • Context and Importance: This term is the central structural innovation for refining particle size and preventing leaks. Its construction will determine whether infringement requires a specific, complex spiral path or if any non-linear path suffices. Practitioners may focus on this term because its scope dictates the range of accused product designs that could be found to infringe.
  • Intrinsic Evidence for a Broader Interpretation: The specification provides some support for a broad definition, describing the path as "non-linear" (’004 Patent, col. 10:50-51) or "convoluted" (’004 Patent, col. 2:44), which might be argued to cover any path that is not straight.
  • Intrinsic Evidence for a Narrower Interpretation: The figures and detailed description of the preferred embodiments show a helical or spiral path that makes "at least one full revolution" (’004 Patent, col. 10:31-32) or "at least two full revolutions" (’004 Patent, col. 16:1-2). This could support an argument that the term is limited to such multi-turn, spiraling structures.

The Term: “insert positioned downstream of the diffusion head” (from '004 Patent) / “insert positioned downstream of the venturi device” (from '976 Patent)

  • Context and Importance: This limitation defines the required relationship between two key components. The case may turn on whether the accused product has two distinct parts corresponding to the "insert" and the "diffusion head/venturi device" or a single, integrated component.
  • Intrinsic Evidence for a Broader Interpretation: The patents contemplate that these components may be joined together or even manufactured as a "single unitary piece" (’004 Patent, col. 10:15-18), which may support a finding of infringement even if the accused device uses an integrated design.
  • Intrinsic Evidence for a Narrower Interpretation: The claims recite the "insert" and the "diffusion head" or "venturi device" as separate elements. This could support an argument that an accused device with a single, indivisible component that performs both functions does not meet this limitation literally.

VI. Other Allegations

Indirect Infringement

The complaint makes a bare allegation of indirect infringement by stating infringement occurs "individually and/or jointly with its customers" (Compl. ¶26, ¶33). However, it pleads no specific facts to support the knowledge and intent elements required for induced infringement, such as references to user manuals or marketing that instruct customers to perform infringing acts.

Willful Infringement

The complaint requests a finding that the case is "exceptional" under 35 U.S.C. § 285, which is a basis for awarding attorney's fees (Compl. ¶29, ¶36). It does not, however, contain specific factual allegations to support a claim of willful infringement, such as pre-suit knowledge of the patents or the alleged infringement.

VII. Analyst’s Conclusion: Key Questions for the Case

This case presents several fundamental questions that will likely determine its course and outcome.

  • A central, case-dispositive issue will be one of legal viability: can Plaintiff maintain an infringement action on claims that the USPTO confirmed were cancelled via Inter Partes Review certificates issued nine months prior to the filing of the operative complaint?
  • Should the case proceed, a key question will be one of definitional scope: how will the court construe the term "tortuous passage"? The dispute will likely focus on whether the term is limited to the spiraling, multi-revolution passages shown in the patent embodiments or if it can be read more broadly to cover any non-linear path within a scent cartridge.
  • Finally, a critical evidentiary question will be one of structural correspondence: does the accused ScentAir Breeze system contain the discrete, multi-component assembly (i.e., a distinct "diffusion head" and a downstream "insert") required by a literal reading of the claims, or does it utilize an integrated design that creates a potential mismatch with the claim language?